A trademark will protect the brand identity of your business or product against envious competitors by preventing them from using your trademark in commerce.
For full trademark rights, you need to register your mark, although you can obtain common law trademark rights by using your mark in commerce before anyone else does.
Texas offers a process by which you can register your trademark in the state. Federal registration is also available.
Trademark Registration Cost
The cost of trademark registration can add up if you select an inexperienced lawyer who charges you by the hour. A more experienced lawyer, ironically, will probably cost you less, because the total number of billable hours will be less. In any case, the cost for trademark registration, whether hourly or flat fee. should not exceed a few hundred dollars unless your application involves a special complication (filing in many classes, for example).
Government filing fees are $50 per class for Texas registration and $225-$400 per class for federal registration. It is best not to try to save money by conservatively estimating the number of classes you want your trademark to cover. Such an approach might save you money in the short run, but it is likely to cost you a lot later.
Texas Trademark Registration Process
If you want to register your trademark in Texas, rather than nationally, you will need to qualify under Texas rules and follow the Texas procedures.
Your trademark must meet the following qualifications before the state of Texas will register it:
- You must be using it in commerce in Texas;
- It must be distinct from any other trademark registered in Texas; and
- It must be distinct from any other trademark registered by the USPTO.
The process works like this:
- Fill out a Trademark or Service Mark Application Form and have notary public notarize it;
- Gather three items of evidence that you are using your trademark in Texas (photos, advertisements, etc.);
- Submit the notarized application and evidence to the Texas Secretary of State together with applicable fees;
- Respond to any requests for clarification or additional information from the Texas state government (you will have 90 days to respond to each such request); and
- After Texas issues your trademark registration, use the ™ symbol to indicate your trademark registration—do not use the ® symbol unless the US Patent and Trademark Office (USPTO) has granted you federal registration.
An approved trademark registration in Texas will get you five years’ worth of protection. If you are still using it in commerce at the end of five years, you can seek a five-year renewal. Keep in mind that if you obtain federal registration, you probably won’t need Texas registration.
Federal Trademark Registration
If you successfully register your trademark with the USPTO, you will gain nationwide protection of your trademark rights. The USPTO maintains a regional office in Dallas. Federal registration comes with many benefits, including:
- It serves as evidence of the ownership, validity, and enforceability of your trademark;
- It can prevent the registration of similar marks;
- It can prevent an infringer from pleading “innocent infringement”;
- You can have US Customs and Border Protection prevent the importation of infringing goods;
- You gain access to the federal courts and to statutory and treble damages;
- It helps you register your mark in foreign countries; and
- Your trademark can become “incontestable” after five years.
To obtain a federal trademark registration, you will need to complete the following steps:
- Perform a trademark search to confirm the uniqueness of your trademark;
- Complete the federal trademark application, preferably for registration on the USPTO’s Principal Register;
- File your application together with supporting documents and the applicable fee (you can file online);
- Respond to all correspondence form the USPTO, especially Office Actions;
- Wait while the USPRO publishes your trademark in its Official Gazette for 30 days— absent a successful opposition, it will register your trademark and issue you a Notice of Allowance;
- Within six months after the USPTO issues you a Notice of Allowance, submit a Statement of Use to the USPRO;
- Continue using your mark in commerce; and
- Extend your trademark registration during your sixth and tenth years after registration by filing certain paperwork with the USPTO.
All these steps are more complicated than they may appear and require the assistance of a trademark lawyer to avoid mistakes.
Start the Texas Trademark Registration Process Today
Trademark registration in Texas is not always necessary. If you are going to do it at all, however, you need to do it correctly. By contrast, federal trademark registration is almost always a good idea. It may seem complex, but Joshua Massingil, Attorney at Law, PLLC, we excel at making things simple.
Keep your eye on the big picture and leave the critical details to us! Call us at 512-601-6794 or contact us online to book a consultation.